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08 February 2017

Domain name transferred under UDRP restituted by French court in absence of infringement

The Paris Court of Appeal has decided that a domain name that had been transferred following a decision under the UDRP had to be transferred back to its initial owner due to the absence of trademark infringement. The case highlights that a UDRP decision does not preclude issuing court proceedings, and that the assessment of trademark infringement is intrinsically different from the assessment conducted under the UDRP.

07 February 2017

Untimely annulment of Article 14 of Decree-Law No 556 creates legal gap

Late last year the Constitutional Court annulled Article 14 of Decree-Law No 556, which governed revocation actions based on non-use. The decision entered into force on January 6 2017. Only four days later, the new IP Code - which replaced Decree-Law No 556 - came into force. There is thus a four-day legal gap, and pending actions filed on the basis of Article 14 now risk being dismissed based on the lack of legal ground.

06 April 2017

‘.feedback’ fires salvo over PICDRP complaint; threatens to “de-accredit” MarkMonitor as a registrar

Three weeks after being found in breach of its ICANN compliance obligations as a result of a public interest commitment dispute resolution procedure (PICDRP) complaint, Jay Westerdal, CEO of ‘.feedback’, has fired back at MarkMonitor, one of the parties to the PICDRP. In a letter obtained by World Trademark Review, he alleges that the PICDRP disclosed confidential information and gives MarkMonitor 30 days to cure that breach or face being de-accredited as a registrar for the string.

06 April 2017

General Court provides guidance on revocation of EUTMs for non-use

In IR v EUIPO, the General Court has upheld a EUIPO decision granting Pirelli’s application for the revocation of the mark POPCHRONO on the ground of non-use. The decision provides guidance on several issues relating to the revocation of EUTMs under Article 51(1)(a) of Regulation 207/2009. The mark owner had put forward several ‘imaginative’ arguments, such as Pirelli’s alleged anti-competitive behaviour and the EUIPO’s alleged failure to invite the parties to settle.

06 April 2017

Joint circular sets out new rules for resolving '.vn' disputes

A joint circular issued by the Ministry of Information and Communication and the Ministry of Science and Technology provides for clear rules and procedures for coordination between the relevant authorities in implementing administrative decisions involving ‘.vn’ domain names deemed to be infringing on IP rights. Regrettably, the circular does not address the situation where the domain name is not associated with an active website with content infringing an IP right.

31 March 2017

General Court: no likelihood of confusion between figurative 'e' marks for certain energy-related goods and services

In Edison SpA v EUIPO, the General Court has confirmed that there was no likelihood of confusion between two figurative marks consisting of a stylised letter ‘e’ for certain energy-related goods and services. Among other things, the court agreed with the Board of Appeal’s finding that the relevant public would not base its purchasing decision exclusively on a commonly used abbreviation in the energy market but, rather, on the specific stylisation given to the letter ‘e’.

30 March 2017

Latest edition of our free-to-view global guide to trademark law is now available online

The World Trademark Review Yearbook provides legal professionals worldwide with a simple, easy-to-use guide on the structure of trademark regulations in key jurisdictions across the globe. The 10th edition, which includes an interactive online comparison tool which allows practitioners to directly compare trademark procedures in up to four countries, is now available online.

29 March 2017

As ‘Brexit Day’ arrives, now is the time for brands to identify what IP rights could be affected

The United Kingdom government officially triggered Article 50 at lunchtime today, beginning the two-year process of negotiations that will lead to the UK leaving the European Union. While uncertainty still reigns, the impact on trademarks and designs could be significant – and with Brexit now a certainty, brand owners should ensure they know exactly what rights could be affected once ‘leaving day’ arrives.

19 April 2017

Paris court decision shows that court proceedings against domain name holder may be useful tool to tackle identity theft

The Paris Court of First Instance has ordered the transfer of a domain name consisting of the name of a person whose identity had been misused, most likely fraudulently. The decision illustrates that court proceedings against a domain name holder may be a very useful tool to tackle identity theft – contrary to alternative dispute resolution mechanisms such as the UDRP, which often do not allow for the protection of personal names per se.

18 April 2017

Use of EUTM by third party may constitute genuine use even where proprietor's consent must be deduced

In Windrush AKA LLP v EUIPO, the General Court has upheld a decision of the First Board of Appeal of the EUIPO in which the latter had found that there was genuine use of the mark THE SPECIALS for CDs. The court found that the board had rightly deduced that there was consent on the part of the trademark owner – the founder of UK band The Specials – to use of the mark by a record company.

13 April 2017

Halving of Chinese trademark fees provides immediate costs benefit for counsel, but raises squatting concerns

Reversing a trend towards increases seen across several Asian jurisdictions of late, the China Trademark Office of the State Administration of Industry and Commerce has slashed user fees by half. While the reduction is welcome in terms of budgets, many trademark counsel will be concerned about a potential increase in indirect enforcement costs should squatters try to take advantage of the lower fees.

10 April 2017

Design patent cancelled based on earlier trademark registration

The board of appeal has cancelled a design patent for a sweet wrapper bearing the Russian word for 'Africa' based on an earlier figurative trademark containing the Russian word 'Liovushka' ('pet lion') for sweets in Class 30. Among other things, the board found that the dominant features of the design patent and the trademark produced the same general visual impression.

10 April 2017

Co-branding: did the High Court in Samsonite get its description right?

In Samsonite IP Holdings Sarl v An Sheng Trading Pte Ltd, the High Court has considered whether the parallel importation of backpacks bearing the trademark SAMSONITE into Singapore, as part of what was called a co-branding agreement, was permitted under the doctrine of exhaustion of rights.

23 March 2017

15 years at the top: China’s trademark office received a record-breaking 3.7 million applications last year

The State Administration of Industry and Commerce (SAIC) – the regulatory body that encompasses China’s national trademark office – announced some headline figures for 2016 yesterday. China continues to lead the world in trademark filings and year-to-year growth shows no sign of slowing down.

21 March 2017

Supreme Court rules against Lacoste in battle over crocodile mark

In Crocodile International PTE Ltd v Lacoste, the Supreme Court has ruled that one of Lacoste’s trademarks must be removed from the trademark register because Lacoste has not used it. Interestingly, the court ruled that, if a trademark has not been used, there is no discretion not to revoke it.